Section 60 of the Copyright Act: Finally, Some Answers(?)

Section 60 of the Copyright Act: Finally, Some Answers(?)

Time Stamp: January 19, 2024 4:24 AM
Source Node: 3071343

While much of discourse around copyright infringement is around the owner’s rights, very little attention has been paid to the normalization of over-protection of material! Copyright trolls, and entities that make their living off of sending infringement notices (whether with any basis or not) are not uncommon anymore. India is actually one of the few jurisdictions where the legislators had the foresight to include some protection against just this! Section 60 of the Copyright Act provides remedies for groundless threats of legal action for alleged ‘infringement’. Given how little discourse there has been around this provision, it is not surprising though, that there is still much room for conceptual and interpretative clarity. Anirud Raghav brings us a very interesting post on this issue, as discussed by the Bombay High Court in a recent judgement. Given the very valid questions he raises, we may follow this up with another post trying to delve a bit further into this section! For now though, read on for Anirud’s take on this case. Anirud is a 2nd Year at the National Law School of India University, Bangalore.

The first book in the plaintiff’s “Bond of Brothers” series. Image from here

Section 60 of the Copyright Act: Finally, Some Answers(?)

By Anirud Raghav

Groundless threat provisions are unique to very few jurisdictions – India being one of them, UK and Australia (see Section128 of the Patents Act, 1990) are two other notable ones. Section 60 of the Copyright Act, 1957 is the relevant provision in the copyright context which provides remedy against groundless threats of legal action. Broadly, Section 60 empowers an alleged infringer (the person who is threatened) to sue anyone making groundless threats of legal action against him. The reliefs are threefold: injunction, declaration of non-infringement and damages, if the plaintiff can show losses incurred due to such groundless threats of legal action. Barring few instances, Section 60 jurisprudence is greatly underdeveloped and inchoate. This state of affairs is partly remedied by the recent Bombay High Court judgment in Manya Vejju v. Sapna Bhog. It answers some persistent questions about Section 60 suits and is perhaps the first of its kind to undertake a comprehensive survey of Section60 suits, making it an important judgment. In this post, I will go over the facts of the case, the court’s findings and identify some issues with the judgment.

Facts and Issues

The plaintiff, Sapna, is an author. She self-publishes literary works. The concerned work here is her Indie romance series entitled “The Bond of Brothers”. The defendant, Manya, argues that Sapna’s series are an unauthorized copy of her (Manya’s) own literary work, entitled “The Varma Brothers”. Manya alleged unauthorized copying and plagiarism numerous times on social media, in respect of certain chapters of the two books. This caused losses to Sapna. Sapna then issues cease and desist notice to Manya, asking for a take-down of the social media posts, tender an unconditional apology and compensation. In response, Manya lodges an FIR under Section 385 (Putting person in fear of injury in order to commit extortion) and Section 506 (Punishment for criminal intimidation) of the IPC. Later, the chargesheet was altered to insert Section 63 (Offence of infringement of copyright or other rights conferred by this Act) and Section 65 (plates for purpose of making infringing copies) of the Copyright Act as well. At this point, Sapna brings a Section 60 suit seeking declaration of non-infringement, and that the threats were groundless. The district court held in favour of Sapna, and assigned elaborate reasons to hold that there was no infringement. Thus, Manya prefers an appeal to the High Court.

The main issue fell to the court was as follows: Whether lodging an FIR constitutes commencement of legal proceedings, thereby activating the proviso to Section 60 and rendering the plaintiff’s Section 60 suit non-maintainable? In brief, Section 60’s proviso provides that if the threatener, with due diligence, actually files an infringement suit vis-à-vis the threats made, then Section 60 ceases to apply.

Court’s Findings

Four findings are of particular importance, both in terms of the questions they answer, and those they raise. First, the Court finds that Section 60 suits become infructuous the moment infringement proceedings are initiated, with “due diligence”. Second, the infringement action within the meaning of the proviso must relate to the same subject matter as the Section 60 suit, i.e., the threats tendered and the action instituted must coincide. Third, in a Section 60 suit, the court should restrict itself to a prima-facie analysis of groundlessness rather than analyse the merits of an infringement claim. Fourth, the term “prosecution” will include civil and criminal actions instituted against the petitioner. 

A. Section 60 suit lapses upon initiation of infringement proceedings.

The central issue of what happens to Section 60 suit upon initiation of infringement proceedings was answered without much difficulty (a previous blogpost addresses this question and identifies some issues with this position). The court cites Mac Charles v. IPRS and Super Cassettes to hold that initiation of infringement proceedings will render the Section 60 suit infructuous, since this will trigger the proviso.

B. The action (under proviso) must be in respect of the alleged infringement.

Let’s briefly summarize. FIR was lodged by Sapna, due to which Manya instituted a Section 60 suit and got a favourable interim order from the District Judge. Interestingly, at this point, Sapna files an infringement suit before a Civil Court in Hyderabad. It is bewildering that such a crucial fact should appear at the fag end of the judgment. In any event, the Court held that since this infringement proceeding appeared after the District Judge decided the Section 60 case, the Judge could not have had the benefit of examining the plaints in infringement proceeding to decide whether indeed such proceeding was in respect of the threats tendered. In other words, the court is saying that for an action to activate the Section 60 proviso, it must be in respect of the threats tendered to the plaintiff of a Section 60 suit (the threats that formed the plaintiff’s cause of action)..

C. In a Section 60 suit, the court should not delve into the merits of the case. It must analyse prima facie, whether there are grounds for infringement.

In the instant case, the district judge was held to have delved into the substance of the case. He had assigned elaborate reasons in determining whether there was infringement. In the court’s view, the district judge had exceeded his jurisdiction and gone overboard. The reason being – it was a Section 60 suit for injunctive and declaratory relief.

This clarifies an important facet of Section 60 jurisprudence, namely, the evidentiary standards applicable to show “groundlessness” of threats. The judgment suggests that the applicable standard is merely a prima facie one, i.e., the plaintiff must establish prima facie that the threats were groundless.

D. Interpreting “Prosecution” and “Action” in the Section 60 proviso

The novel contributions of this case lie in its construction of the terms “prosecution” and “action” in the Section 60 proviso.

Section 60’s proviso provides that if the person making threats “commences and prosecutes” an “action” for infringement, then Section 60 will not apply. So, two immediate questions arise: a) what is the scope of the term “prosecution”? Does it refer solely to criminal prosecution (as the traditional usage of the term goes) or it includes civil remedies as well?  b) What does “action” mean and how does it differ from a suit?

a) Prosecution: Both Civil and Criminal Remedies

The court remarks that the term “prosecute” will include both criminal and civil remedies. The court’s reason is that under the Copyright Act, the right-holder has both civil (Section 55) and criminal remedies (see Chapter 8). Considering this, it would make little sense to limit infringement action solely to criminal action, especially if the purpose of Section 60 is just to ensure that bona fide legal action is taken with respect to the threats. Moreover, since copyright infringement suits predominantly seek civil remedies, particularly injunctive relief, it would be meaningless to limit it merely to criminal remedies.

b) “Action” – Ambiguity and a provisional explanation

The other unclear term in the proviso is “action”. What would the scope of the term be and how exactly does it differ from an infringement suit? This issue became relevant in examining whether filing an FIR would be considered “action” within Section 60 proviso (thereby invalidating the Section 60 suit).

The Court suggests that the term “action” is admittedly broader than the term “suit”, which typically only refers to civil actions. The legislature could’ve used the term “suit” instead of “action” if it wanted to, but it didn’t. From this, the court infers that the legislature probably intended to cover filing of FIRs within the meaning of “action” as well. Afterall, it is often said that filing an FIR puts the criminal justice process in motion and is broadly a part of criminal action.

Interestingly, in the instant case, the court held that it would not be possible to say whether the FIRs were “actions” since they had already been quashed by the Telangana High Court.

Let us examine this position in greater depth. So, we know that Manya filed FIRs against Sapna under Section 385 and Section 506 of the IPC. Pertinently, in response, Sapna went to the Telangana High Court with a petition under Section 482 of CrPC (inherent powers of the High Court), praying for the Court to quash the FIRs. The Telangana High Court, satisfied by Sapna’s case, quashes the FIRs and stays all criminal proceedings against Sapna in this respect. Considering this record, the Bombay High Court in Manya Vejju says that the FIR had lost its character of “proceeding”. Presumably, the court meant that since the FIRs were quashed, they could never mature into a trial. Since they could never mature into a trial, it technically should not qualify as “action”. This matters because the purpose of the Section 60 proviso is that the threats of legal proceedings had actually transformed into legal proceedings. So, the threats aren’t mere threats anymore. Thus, necessarily, the word “action” should involve some form of judicial assessment of infringement. Since this could not be possible where the FIRs were quashed and all criminal proceedings in this respect were stayed, the FIRs right then and there lost their character as a “proceeding”. Alas, it is still unclear why the court should say that FIRs lost their character as a “proceeding” and not their character as an “action” itself. Are we now to speculate that proceeding is different from action? My sense is that in either case, it would not make much of a difference since the above reasoning would still stand. In sum, the bottom line is that the word “action” should necessarily involve judicial assessment of the infringement claims which were the subject matter of the threats.

The Due Diligence Conundrum

Whatever the virtues of this case, one thorny issue persists. This is the interpretation of the term “due diligence” in the proviso to Section 60. Both the proviso as well as the court mentions that an action for infringement must be taken with due diligence. One wonders why this is. What does due diligence mean in this context? In what kind of instances can we say that proceedings were initiated without due diligence? Nobody knows yet. It would be understandable if “due diligence” was just yet another instance of legislative verbosity, but it is not – the court stresses the importance of these words in Paragraph 34, emphasizing that the proceeding so initiated must be a “meaningful one”. If “meaningful” proceeding means making meritable infringement claims, this raises further issues: how could one say whether the infringement proceeding was instituted with due diligence before the proceedings end? Surely, only after the adjudication, after hearing both sides, can the court decide which side’s case holds merit. In other words, determining whether a proceeding is instituted with due diligence is necessarily a post-facto enquiry. The corollary of taking this interpretation will be this: now, any Section 60 plaintiff could claim the defence that the infringement proceedings were not initiated with due diligence. And there’s no way for the court to independently verify whether indeed the infringement proceedings were initiated with due diligence – it’s a whole separate Section 55 suit (civil remedies for infringement) after all, instituted elsewhere. Now, what is the court to do? If it allows such a defence, it will end up rendering the proviso inoperative since this defence could virtually be claimed in every case. If it does not allow such a defence, it will need to give very good reasons to deny such a defence, which will foreseeably be a difficult task due to the lack of authorities or literature on the subject. Thus, we see how the phrase “due diligence” could cause interpretative struggles. This phrase has hitherto been altogether ignored in Section 60 adjudication, but Manya might potentially alter this given its obiter on “due diligence”.

Conclusion

All said and done, Manya clarifies some important facets of Section 60 and is a valuable addition to copyright jurisprudence. It provides a rather balanced analysis, accounting for the user’s and the copyright holder’s rights, which is its main virtue. Yet, some questions evidently persist. Our only comfort is that Section 60 jurisprudence is still young and will hopefully attain greater clarity in the times to come.

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